Appeal No. 2001-2320
Application 09/097,295
In proposing to modify the methods respectively disclosed by
Parsons and Steenstrup so as to arrive at the invention set forth
in claims 1, 26 and 30, the examiner concludes (see pages 3 and 5
in the final rejection) that it would have been obvious to
implement the groove forming steps in these methods by means of a
microstructure-changing, non-cutting material deformation carried
out by a roller as taught by Palmer or a striking ram as taught
by Ito.
The appellant attacks these conclusions on the grounds that
neither Palmer nor Ito teaches or suggests the use of a
microstructure-changing, non-cutting material deformation or a
ram-striking process to form a groove, and that the applied
references do not contemplate the problems addressed by the
claimed invention or offer any suggestion or motivation which
would have led one of ordinary skill in the art to combine them
in the manner proposed. None of these arguments is persuasive.
To begin with, the examiner’s finding (see pages 3 and 5 in
the final rejection and pages 3 through 5 in the answer) that
both Palmer and Ito employ microstructure-changing, non-cutting
material deformations to form grooves is reasonable on its face
given the nature of the material deformation or flow which
necessarily occurs when the grooves are formed. The appellant
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